Amicus Committee

Amicus Committee

Amicus Committee

The Naples RoundtableTM Amicus Committee is responsible for making recommendations to the Officers and Advisory Board for action to be taken regarding issues before the courts in the United States.  The Committee’s actions with respect to matters before the Federal Circuit is exclusive and independent of the Advisory Board, as well as anyone attending or participating in the Naples Roundtable or the Leahy Institute of Advanced Patent Studies.

Andrew S. Baluch, Chair

Hon. Sharon R. Barner
Hon. Q. Todd Dickinson
Teresa M. Summers

An International Comparison of Patent Eligibility and Experimental Use
Andrew Baluch, Teresa Summers and Jason Weil published a whitepaper containing an international comparison of the patent eligibility and experimental use defense codified in several major jurisdictions around the world (United States, Singapore, United Kingdom, Germany, France, South Korea, Japan, and China).  Unlike the United States, most other countries most other countries have codified an “experimental use” defense in their patent laws, allowing any patented invention to be used for the purpose of researching, testing, and improving upon a patented invention. Those same countries also tend to permit patenting of subject matter more broadly under their patent laws than the United States. Given the U.S. Supreme Court’s concern that broad patent eligibility poses a risk of “pre-emption,” the United States Congress may wish to consider whether to codify an “experimental use” defense as part of a legislative bargain that also broadens the scope of patent eligibility under 35 U.S.C. § 101.

Proppant Express Investments, LLC v. Oren Technologies, LLC

In December 2018, the Amicus Committee filed an amicus brief in the first-ever Precedential Opinion Panel (“POP”) panel constituted by USPTO Director Iancu.  The POP panel called for amicus briefing in Proppant Express Investments, LLC V. Oren Technologies, LLC, Case IPR2018-00914 (PTAB), seeking briefing to help resolve an intra-PTAB conflict regarding the interpretation regarding the inter partes review “joinder” provision of 35 U.S.C. 315(c).  In its amicus brief, the Naples Roundtable advocated for a balanced approach to this provision, which empowers the USPTO to join both the same petitioner and new issues to an existing proceeding, but also allows the USPTO to deny joinder, in the USPTO’s discretion, if it perceives that the petitioner is improperly seeking a “second bite at the apple” against the patent.

Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA

As early as 2016, the Amicus Committee identified Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA as a case of exceptional importance meriting the organization’s scholarly input.  The case involves an issue of first impression regarding the AIA’s first-inventor-to-file provision in 35 U.S.C. § 102(a): whether an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art.  Prior to any appellate decision in the case, the Naples Roundtable filed an amicus brief in the Federal Circuit in 2016 urging the original Federal Circuit merits panel to consider Congress’ twin goals in adopting a first-inventor-to-file regime of achieving (a) greater international harmonization with other countries and (b) greater certainty regarding the scope of patent protection.  After the petitioner filed a petition for writ of certiorari to the Supreme Court, the Naples Roundtable filed a cert-stage amicus brief in April 2018 urging the Supreme Court to grant the petition. In June 2018, the Supreme Court agreed with the Naples Roundtable and granted the petition.  In August 2018, the Naples Roundtable filed a merits-stage amicus brief in support of neither party, which, among other things, brought to the Court’s attention the laws of other countries that do not treat such sales as prior art.